Whirlpool owns the ’688 patent, which relates to household blenders. The invention claimed is a pre-programmed, automated blending cycle designed to blend items “quickly and reliably—by repeatedly dropping to a speed slow enough to allow the blender contents to settle around the cutter assembly, and then returning to a [higher] speed suitable for processing the contents.” Homeland petitioned the Board for an inter partes review of claims 1-16, seeking a construction of “settling speed” and arguing that the claims at issue were invalid as anticipated by Wulf. The Board declined to provide a construction of “settling speed” and determined that the claims were not invalid as anticipated. Homeland appealed.

The Court first analyzed the correct construction of “settling speed.” Whirlpool proposed that “a predetermined settling speed” means an empirical speed “greater than zero, that indicates that items have settled around the cutter assembly.” The Court found that a construction requiring empirical testing is incorrect. The words of a claim are generally given their ordinary and customary meaning. The plain meaning of “pre-determined” is to determine beforehand. This does not require that a predetermined speed be empirically determined for each use. Claims must also be read in view of the specification. Here, the claim language only requires “a predetermined settling speed,” and does not require empirically determining a particular settling speed for a particular blender or a particular blender load. Homeland proposed that “settling speed” means any comparative low speed less than the operating speed. The Court also rejected Homeland’s definition, because not every lowering in speed will cause settling. Instead, the Court adopted a definition not proposed by either party: “a speed that is slower than the operating speed and permits settling of the blender contents.” The Court found that this was consistent with the ordinary and customary meaning of the words of the claim and with the specification. It was also “the broadest reasonable interpretation consistent with the written description.”

Based on the Court’s construction of “settling speed,” it concluded that the Board erred in finding that Figure 25 of Wulf does not anticipate the ’688 patent. First, the Court analyzed what Figure 25’s “low” speed means. Because Wulf uses “low speeds” to refer to speeds at which blending ingredients fall back to the cutters, the Court found that Figure 25’s use of that term should be understood in the same manner. Additionally, Wulf makes clear that a “low” speed is discretely and significantly different from a “high” speed. In light of these teachings, Wulf’s Figure 25 discloses a settling speed limitation, as construed by the Court, and shows every limitation found in claim 1 f the ’688 patent.

The Board found that Homeland “left the testimony of Patent Owner’s witness, Mr. Faerber, unrebutted. Under such circumstances, [it was] unwilling to discount Mr. Faerber’s testimony that Wulf” does not anticipate. However, certain portions of Faerber’s testimony were inconsistent with the intrinsic record. The Court disregarded this testimony because “a court should discount any expert testimony that is clearly at odds with . . . the written record of the patent.” Having concluded that all the claims of the ’688 patent were invalid as anticipated by Wulf, the Court reversed the Board’s decision.

Judge Newman dissented, first arguing that the Court rewrote the claims of the ’688 patent by adopting a claim construction that states the invention more broadly than Whirlpool did. Judge Newman then argued that although Whirlpool provided an improvement that was not shown in the prior art, the Court incorrectly held that its broadened claims were anticipated by Wulf.

When parties dispute the proper scope of claims, the Board must provide an explicit claim construction. The Court may construe the claims de novo. When comparing prior art evidence to properly construed claims, the Court may disregard expert testimony if it is plainly inconsistent with the written record, even if the testimony was unrebutted.

The Author

Robert Schaffer
is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

Joseph Robinson
has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

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Patent InvestorAugust 11, 2017 2:10 pm

So, Newman, Stoll, and Chen in a precedential PTAB decision rule the panel can’t introduce a new claim construction in the Final Written Decision because it does not allow the parties their right to argue the new construction. Along comes Prost and Dyk in a precedential decision and not only change the claim construction, but act as counsel for both sides, judge, and jury to cancel the claims.

I’m surprised there isn’t more outrage on this blog by now, but I guess everybody is in DC burning their patents (and more power to you for doing so!!!)

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